REPUBLIC ACT N0.

8293
LAW ON PATENTS
CHAPTER X
 GROUNDS FOR COMPULSORY LICENSING
o National emergency or other circumstances of extreme urgency
o Where the public interest so requires
o Where a judicial or administrative body has determined that the
manner of exploitation by the owner of the patent or his licensee is
anti-competitive
o In case of public non-commercial use of the patent by the
patentee, without satisfactory reason
o If the patented invention is not being worked in the Philippines on
a commercial scale, although capable of being worked, without
satisfactory reason
 PERIOD FOR FILING A PETITION FOR A COMPULSORY LICENSE

o For Subsection 93.5. A compulsory license may not be applied

before the expiration of a period of four years from the date of the
patent whichever period expires last.

o For Subsection 93.2, 93.3 and 93.4. A compulsory license may be

applied for at any time after the grant of the patent.
REQUIREMENT TO OBTAIN A LICENSE ON REASONABLE COMMERCIAL TERMS

o The petitioner has made efforts to obtain authorization from the patent
owner on reasonable commercial terms and conditions but such efforts
have not been successful within a reasonable period of time
o Exceptions:
a. Where the petition for compulsory license seeks to remedy a
practice determined after judicial or administrative process to be
anti-competitive
b. In situations of national emergency or other circumstances of
extreme urgency
c. In cases of public non-commercial use
REQUIREMENT TO OBTAIN A LICENSE ON REASONABLE COMMERCIAL TERMS

o In situations of national emergency or other circumstances of

extreme urgency, the right holder shall be notified as soon as
reasonably practicable

o In the case of public non-commercial use, where the government

or contractor, without making a patent search, knows or has
demonstrable grounds to know that a valid patent is or will be used
by or for the government, the right holder shall be informed
promptly
Compulsory Licensing of Patents Involving Semi-Conductor Technology
q The license may only be granted in case of public non commercial use or to

remedy a practice determined after judicial or administrative process to be

anti-competitive

Compulsory License Based on Interdependence of Patents

ü The invention claimed in the second patent involves an important
technical advance of considerable economic significance in relation to
the first patent
ü The owner of the first patent shall be entitled to a cross-license on
reasonable terms to This
CREDITS: use the invention
presentation claimed
template was created in including
by Slidesgo, the second patent;
ü The use authorized in respect of the first patent shall be nonassignable
icons by Flaticon, and infographics & images by Freepik

except with the assignment of the second patent

ü The terms and conditions of Sections 95, 96 and 98 to 100 of this Act.
 FORMS AND CONTENTS OF PETITION

The petition for compulsory licensing must be in writing, verified by

the petitioner and accompanied by payment of the required filing fee. It
shall contain the name and address of the petitioner as well as those
of the respondents, the number and date of issue of the patent in
connection with which compulsory license is sought, the name of the
patentee, the title of the invention, the statutory grounds upon
which compulsory license is sought, the ultimate facts constituting the
petitioner's cause of action, and the relief prayed for.
 NOTICE OF HEARING
q Upon filing of a petition, the Director of Legal Affairs shall forthwith
serve notice of the filing thereof upon the patent owner and all
persons having grants or licenses, or any other right, title or interest
in and to the patent and invention covered thereby as appears of
record in the Office, and of notice of the date of hearing thereon, on
such persons and petitioner

q In every case, the notice shall be published by the said Office in a

newspaper of general circulation, once a week for three (3)
consecutive weeks and once in the IPO Gazette at applicant's
expense
 Terms and Conditions of Compulsory License
1. The scope and duration of such license shall be limited to the purpose for
which it was authorized
2. The license shall be non-exclusive
3. The license shall be non-assignable, except with that part of the enterprise
or business with which the invention is being exploited
4. Use of the subject matter of the license shall be devoted predominantly
for the supply of the Philippine market
5. The license may be terminated upon proper showing that circumstances
which led to its grant have ceased to exist and are unlikely to recur
6. The patentee shall be paid adequate remuneration taking into account
the economic value of the grant or authorization, except that in cases
where the license was granted to remedy a practice
 AMENDMENT, CANCELLATION, SURRENDER OF COMPULSORY LICENSE
q The Director of Legal Affairs may amend the decision granting the
compulsory license
q The said Director may cancel the compulsory license:
ü If the ground for the grant of the compulsory license no longer exists
and is unlikely to recur;
ü If the licensee has neither begun to supply the domestic market nor
made serious preparation therefore;
ü If the licensee has not complied with the prescribed terms of the
license
q The licensee may surrender the license by a written declaration submitted
to the Office
q The said Director shall cause the amendment, surrender, or cancellation in
the Register, notify the patentee, and/or the licensee, and cause notice
thereof to be published in the IPO Gazette
Any person who works a patented product, substance and/or process
under a license granted under this Chapter, shall be free from any
liability for infringement: Provided however, That in the case of
voluntary licensing, no collusion with the licensor is proven. This is
without prejudice to the right of the rightful owner of the patent to
recover from the licensor whatever he may have received as royalties
under the license.

LICENSEE’S EXEMPTION FROM LIABILITY

CHAPTER XI
 ASSIGNMENT AND TRANSMISSION OF RIGHTS

q Patents or applications for patents and invention to which they relate,

shall be protected in the same way as the rights of other property
under the Civil Code

q Inventions and any right, title or interest in and to patents and

inventions covered thereby, may be assigned or transmitted by
inheritance or bequest or may be the subject of a license contract.
 TRANSMISSION OF RIGHTS

ASSIGNMENT OF INVENTIONS FORMS OF ASSIGNMENT

An assignment may be of the entire The assignment must be in

right, title or interest in and to the writing, acknowledged before
patent and the invention covered a notary public or other officer
thereby, or of an undivided share of authorized to administer oath
the entire patent and invention, in or perform notarial acts, and
which event the parties become joint certified under the hand and
owners thereof. An assignment may official seal of the notary or
be limited to a specified territory. such other officer
 RECORDING
q The Office shall record assignments, licenses and other instruments
relating to the transmission of any right, title or interest in and to inventions,
and patents or application for patents or inventions to which they relate,
which are presented in due form to the Office for registration, in books and
records kept for the purpose

q The original documents together with a signed duplicate thereof shall be

filed, and the contents thereof should be kept confidential. If the original is
not available, an authenticated copy thereof in duplicate may be filed. Upon
recording, the Office shall retain the duplicate, return the original or the
authenticated copy to the party who filed the same and notice of the
recording shall be published in the IPO Gazette
 RIGHTS OF JOINT OWNERS
If two or more persons jointly own a patent and the invention
covered thereby, either by the issuance of the patent in their joint
favor or by reason of the assignment of an undivided share in the
patent and invention or by reason of the succession in title to such
share, each of the joint owners shall be entitled to personally make,
use, sell, or import the invention for his own profit: Provided,
however, that neither of the joint owners shall be entitled to grant
licenses or to assign his right, title or interest or part thereof without
the consent of the other owner or owners, or without proportionally
dividing the proceeds with such other owner or owners.
CHAPTER XII
 APPLICABILITY OF PROVISIONS RELATING TO PATENTS

q The provisions governing patents shall apply, mutatis mutandis, to

the registration of utility models
ü Mutatis mutandis- all necessary changes having been made or with
the necessary changes

q Where the right to a patent conflicts with the right to a utility model
registration, the said provision shall apply as if the word patent were
replaced by the words patent or utility model registration.
 SPECIAL PROVISIONS RELATING TO UTILITY MODELS

o An invention qualifies for registration as a utility model if it is new

and industrially applicable.

o Section 21, "Patentable Inventions", shall apply except the

reference to inventive step as a condition of protection

o A utility model registration shall expire, without any possibility of

renewal, at the end of the seventh year after the date of the filing
of the application
 SPECIAL PROVISIONS RELATING TO UTILITY MODELS
In proceedings under Sections 61 to 64, the utility model registration shall be
canceled on the following grounds:
a. That the claimed invention does not qualify for registration as a utility
model and does not meet the requirements of registrability, in particular
b. That the description and the claims do not comply with the prescribed
requirements
c. That any drawing which is necessary for the understanding of the
invention has not been furnished
d. That the owner of the utility model registration is not the inventor or his
successor in title
CONVERSION OF PATENT APPLICATIONS FOR UTILITY MODEL REGISTRATION

q At any time before the grant or refusal of a patent, an applicant for a patent may,
upon payment of the prescribed fee, convert his application into an application for
registration of a utility model, which shall be accorded the filing date of the initial
application. An application may be converted only once.

q At any time before the grant or refusal of a utility model registration, an applicant for a
utility model registration may, upon payment of the prescribed fee, convert his
application into a patent application, which shall be accorded the filing date of the
initial application

q Prohibition: An applicant may not file two (2) applications for the same subject,
one for utility model registration and the other for the grant of a patent whether
simultaneously or consecutively
INDUSTRIAL DESIGN
CHAPTER XIII
 INDUSTRIAL DESIGN
SUBSTANTIVE CONDITION FOR
DEFINITION OF INDUSTRIAL DESIGN
PROTECTION
o Only industrial designs that are
Any composition of lines or colors or new or original shall benefit from
any three-dimensional form, whether protection under this Act.
or not associated with lines or colors:
o Industrial designs dictated
Provided, That such composition or
form gives a special appearance to and essentially by technical or
can serve as pattern for an industrial functional considerations to obtain
product or handicraft a technical result or those that are
contrary to public order, health or
morals shall not be protected.
 CONTENTS OF THE APPLICATION
#1 #2 #3
An indication of the
Request for Information kind of article of
registration of the identifying the manufacture or
industrial design applicant handicraft to which the
design shall be applied

NOTE: The application may be #4 A representation of the #5 The name and address
article of manufacture or of the creator, or where
accompanied by a specimen of
handicraft as applied to the the applicant is not the
the article embodying the
article of manufacture or
industrial design and shall be
handicraft which clearly and
creator, a statement
subject to the payment of the indicating the origin of
fully discloses those
prescribed fee the right to the industrial
features for which design
protection is claimed design registration
 EXAMINATION
q The Office shall accord as the filing date the date of receipt of the application
containing indications allowing the identity of the applicant to be established and a
representation of the article embodying the industrial design or a pictorial
representation thereof
q If the application does not meet these requirements the filing date should be that date
when all the elements specified in Section 105 are filed or the mistakes corrected.
Otherwise if the requirements are not complied within the prescribed period, the
application shall be considered withdrawn
q After the application has been accorded a filing date and the required fees paid on
time, the applicant shall comply with the requirements of Section 114 within the
prescribed period, otherwise the application shall be considered withdrawn
q The Office shall examine whether the industrial design complies with requirements
of Section 112 and Subsections 113.2 and 113.3
 REGISTRATION
q Where the Office finds that the conditions referred to in Section 113 are fulfilled, it
shall order that registration be effected in the industrial design register and cause the
issuance of an industrial design certificate of registration, otherwise, it shall refuse the
application
q The form and contents of an industrial design certificate shall be established by the
Regulations: Provided, That the name and address of the creator shall be mentioned
in every case
q Registration shall be published in the form and within the period fixed by the
Regulations
q The Office shall record in the register any change in the identity of the proprietor of
the industrial design or his representative, if proof thereof is furnished to it. A fee shall
be paid, with the request to record the change in the identity of the proprietor. If the
fee is not paid, the request shall be deemed not to have been filed.
 TERM OF INDUSTRIAL DESIGN REGISTRATION

The registration of an industrial

design may be renewed for not
more than two (2) consecutive The Regulations shall fix
periods of five (5) years each, by the amount of renewal
paying the renewal fee. The fee, the surcharge and
The registration of an renewal fee shall be paid within other requirements
industrial design shall be twelve (12) months preceding regarding the recording
for a period of five (5) the expiration of the period of of renewals of
years from the filing date registration. However, a grace registration
of the application period of six (6) months shall be
granted for payment of the fees
after such expiration, upon
payment of a surcharge
 CANCELLATION OF DESIGN REGISTRATION
At any time during the term of the industrial design
registration, any person upon payment of the Where the grounds
required fee, may petition the Director of Legal for cancellation relate
Affairs to cancel the industrial design on any of the to a part of the
following grounds: industrial design,
cancellation may be
a. If the subject matter of the industrial design is not effected to such
registrable within the terms of Sections 112 and 113 extent only. The
restriction may be
b. If the subject matter is not new effected in the form of
an alteration of the
c. If the subject matter of the industrial design effected features of
extends beyond the content of the application as the design
originally filed.
THANK YOU!